ZipRecruiter, Inc. v hubert hebry

WIPO Case No. D2023-4024

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ZipRecruiter, Inc. v. hubert hebry

Case No. D2023-4024

1. The Parties

Complainant is ZipRecruiter, Inc., United States of America, represented by SafeNames Ltd., United

Kingdom.

Respondent is hubert hebry, Nigeria.

2. The Domain Name and Registrar

The disputed domain name, <ziprecruitercareers.org> (the “Domain Name”) is registered with NameCheap,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2023. On September 27, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On September 27, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on September 29, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant f iled an

amended Complaint on October 4, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 3, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2023. Respondent did not submit any response. Accordingly, the Center notif ied Respondent’s default on October 26, 2023.

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The Center appointed Mireille Buydens as the sole panelist in this matter on November 2, 2023. The Panel
f inds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant is an American online recruitment company, providing services for both individuals and commercial entities. Since its inception in 2010, Complainant has served more than one million employers and 120 million job seekers. Complainant was ranked 350 in Deloitte’s 2019 Technology Fast 500. It was also named on Fast Company’s 2019 list of “The World’s Most Innovative Companies” within the “Enterprise” sector.

Complainant provides evidence that she owns an international portfolio of trademark registrations for the word mark ZIPRECRUITER (“the Trademark”) in several countries, such as:

- United States of America Trademark Registration No. 3934310, covering class 42, registered on
March 22, 2011;

- European Union Trademark Registration No. 015070873, covering classes 9, 36, 41 and 42,
registered on June 13, 2016; and

- United Kingdom Trademark Registration No. UK00915070873, covering classes 9, 36, 41 and 42,
registered on June 13, 2016.

Complainant operates from “ which received an average of more than 35 million visits per month between October and December, 2022. Complainant also uses the Trademark in connection with other country code Top-Level Domains (“ccTLDs”), such as <ziprecruiter.co.uk>, <ziprecruiter.co.nz>, <ziprecruiter.fr>, and <ziprecruiter.us>. Complainant is active on social media, promoting their products and service online under the Trademark.

The Domain Name has been registered on June 30, 2023. It is being used to direct Internet users to Pay- Per-Click (“PPC”) website displaying advertisement links that redirect Internet users to competing offerings to Complainant. At the date of this decision, the Panel was unable to access the website under the Domain Name (no server connection).

Complainant sent a cease-and-desist letter to Respondent via email on July 14, 2023 but did not receive any response from Respondent. Respondent has activated a mail exchange (“MX”) records for the Domain Name.

5. Parties’ Contentions
A. Complainant

First, Complainant asserts that it owns registered trademarks covering the Trademark. Complainant further explains that the Domain Name is confusingly similar to Complainant’s Trademark as it encompasses the entirety of Complainant’s Trademark with the addition of the term “careers”. In respect of the generic Top- Level Domain (“gTLD”) “.org” featured in the Domain Name, it should be disregarded as it is a standard registration requirement.

Second, Complainant asserts that Respondent lacks a right or a legitimate interest in the Domain Name. To
the best of Complainant’s knowledge, Respondent does not have any trademark rights to the term
“ziprecruiter”, “ziprecruitercareers”, nor any similar term. There is no evidence that Respondent retains any
unregistered trademark rights to the term “ziprecruiter”. Neither has Respondent received any license f rom
Complainant to use a domain name featuring the Trademark. Complainant submits that Respondent has not

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used, nor prepared to use, the Domain Name in connection with a bona fide offering of goods or services.

Third, Complainant asserts that the Domain Name was registered and is being used in bad faith. With regard to the bad faith registration, Complainant’s Trademark registrations predate the creation date of the Domain Name by over twelve years. In addition, searching “ziprecruiter” or “ziprecruitercareers” on popular Internet search engines such as Google list Complainant’s brand and services as the f irst result. The selection of a domain name that is so obviously connected to Complainant’s Trademark strongly suggests “opportunistic bad faith”: Respondent tries to suggest connection with Complainant as the Domain Name replicates the Trademark with the addition of the term “careers”, which is the sector in which Complainant is active. Furthermore, Respondent chooses not to respond to the cease-and-desist letter. Complainant emphasizes that the Domain Name is being used to direct Internet users to a webpage that displays PPC hyperlinks to Complainant’s competitors, which constitutes a clear attempt to generate commercial gain by misleading online users with the Domain Name. In addition, Respondent’s activation of MX records for the Domain Name shows the high risk that could be caused to unsuspected customers of Complainant on receipt of emails f rom the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Dealing with a respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that “[i]f a party, in the absence of exceptional circumstances, does not comply with a provision of , or requirement under, these Rules […], the panel shall be entitled to draw such inferences from this omission, as it considers appropriate.”

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following three elements in order to succeed in its Complaint:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii)       the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it is the owner of various registrations for the Trademark.

The Panel f inds that the Domain Name is confusingly similar to Complainants’ Trademark. The Domain Name incorporates the Trademark. The fact that the Domain Name also contains another term “career” added to the Trademark, does not prevent a f inding of confusing similarity (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.8: “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a f inding of confusing similarity under the f irst element”).

The generic Top-Level Domain (“gTLD”) “.org” is a standard registration requirement and does not prevent the Domain Name from being confusingly similar to the Trademark (see WIPO Overview 3.0, section 1.11.1).

The Panel therefore finds that the Domain Name is confusingly similar to the Trademark. The Panel f inds that Complainant has satisf ied paragraph 4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. “If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element” (see

WIPO Overview 3.0, section 2.1.).

In the Panel’s opinion, Complainant’s submissions set out above under 5.A. give rise to a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence that shows that Respondent is commonly known by the name “ziprecruiter”. Respondent is not affiliated with the Complainant or authorized or licensed to use the Complainant’s Trademark. The Panel notes the

composition of the Domain Name carries a high risk of implied af f iliation with Complainant (see WIPO Overview 3.0, section 2.5.1). The composition of the Domain Name, adding the descriptive term “career” to Complainant’s Trademark along with the gTLD “.org”, coupled with the use of the Domain Name to resolve to a website that displays PPC hyperlinks to Complainant’s competitors, af f irms Respondent’s intention of taking unfair advantage of the likelihood of confusion between the Domain Name and Complainant’s Trademark. Hence, there is no use, nor preparations to use, of the Domain Name in connection with a bona
fide of fering of goods or services.

The facts and circumstances presented to the Panel demonstrate that Respondent does not have any rights or legitimate interests in the Domain Name.

The Panel f inds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given that the Domain Name incorporates Complainant’s Trademark, which predates the registration of the Domain Name and is widely used by Complainant since many years, with the addition of a term “career” which is descriptive in the recruitment sector where Complainant is active, Respondent was more likely than not aware of Complainant’s Trademark at the time of the registration of the Domain Name (see section 3.1.4 of the WIPO Overview 3.0 that states that “the mere registration of a domain name that is identical or

confusingly similar (particularly domain name comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.).

Respondent’s use of the Domain Name as a PPC website displaying links to third-party websites including competitors, supports a f inding of bad faith registration and use (see WIPO Overview 3.0, section 3.5). The Domain Name is also suited to mislead the Internet users. The composition of the Domain Name (the Trademark and the descriptive term “career”) combined with the gTLD “.org”, falsely suggests that Internet users will f ind a website affiliated to Complainant. Respondent has sought to create a misleading impression of association with Complainant, which is a well-known company in the f ield of recruitment and thereby attracts Internet users and inspires conf idence.

Moreover, the fact that Respondent’s activation of MX records for the Domain Name means that Respondent could potentially use the Domain Name for f raudulent purposes such as email scams.

Respondent did not reply to the cease-and-desist letter sent by Complainant and did not reply to the Complaint in this proceeding. The Panel f inds that this further corroborates that the Domain Name has been registered in bad faith and is being used in bad faith.

Based on the evidence and circumstances of this case, the Panel concludes that the requirement of registration and use of the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy is accordingly satisf ied.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <ziprecruitercareers.org> be transferred to Complainant.

/Mireille Buydens/
Mireille Buydens
Sole Panelist
Date: November 16, 2023